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`UNITED STATES COURT OF APPEALS FOR THE FEDERALCIRCUIT
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`NOTICE OF ENTRY OF
`JUDGMENT ACCOMPANIED BY OPINION
`
`OPINION FILED AND JUDGMENT ENTERED: 03/23/2018
`
`The attached opinion announcing the judgmentof the court in your case wasfiled and judgment was entered on
`the date indicated above. The mandate will be issued in due course.
`
`Information is also provided aboutpetitions for rehearing and suggestions for rehearing en banc. The questions
`and answers are those frequently asked and answered bythe Clerk's Office.
`
`No costs were taxed in this appeal.
`
`Regarding exhibits and visual aids: Yourattention is directed Fed. R. App. P. 34(g) which states that the clerk
`may destroy or dispose of the exhibits if counsel does not reclaim them within a reasonable time after the clerk gives
`notice to remove them. (The clerk deems a reasonable time to be 15 days from the date the final mandateis issued.)
`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`
`Peter R. Marksteiner
`Clerk of Court
`
`16-2523, 16-2524 - DSS Technology Managementv. Apple Inc.
`United States Patent and Trademark Office, Case Nos. IPR2015-00369, IPR2015-00373
`
`

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`Case: 16-2523
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`Anited States Court of Appeals
`for the federal Circuit
`
`DSS TECHNOLOGY MANAGEMENT,INC.,
`Appellant
`
`Vv.
`
`APPLEINC.,
`Appellee
`
`2016-2523, 2016-2524
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2015-00369, IPR2015-00378.
`
`Decided: March 23, 2018
`
`ERIC WILLIAM BUETHER, Buether Joe & Carpenter
`LLC, Dallas, TX, argued for appellant. Also represented
`by BRIAN ANDREW CARPENTER; ANDRIY LYTVYN, Smith &
`Hopen, PA, Oldsmar, FL.
`
`JON WRIGHT, Sterne Kessler Goldstein & Fox, PLLC,
`Washington, DC, argued for appellee. Also represented
`by DAVID K.S. CORNWELL, JASON A. FITZSIMMONS.
`
`Before NEWMAN, O’MALLEY, and REYNA,Circuit Judges.
`
`

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`DSS TECH. MGMT. v. APPLE INC.
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`Opinion for the courtfiled by Circuit Judge O’MALLEY.
`
`Dissenting opinion filed by Circuit Judge NEWMAN.
`
`O'MALLEY, Circuit Judge.
`
`In response to two petitions for inter partes review
`filed by Appellee Apple Inc. (“Apple”), the Patent Trial
`and Appeal Board (“Board”) issued a pair of final written
`decisions finding claims 1—4 and 9-10 of U.S. Patent No.
`6,128,290 (‘the ’290 patent”), owned by Appellant DSS
`Technology Management, Inc.
`(“DSS”), unpatentable as
`obvious.
`Apple Inc.
`v. DSS Tech. Mgmt.,
`Inc., No.
`IPR2015-00369, 2016 WL 3382361 (P.T.A.B. June 17,
`2016) (Apple JD; Apple Inc. v. DSS Tech. Mgmt., Inc., No.
`IPR2015-00373, 2016 WL 3382464 (P.T.A.B. June 17,
`2016) (Apple ID). Because wefind that the Board did not
`provide a sufficient explanation for its conclusions, and
`because we cannot glean any such explanation from the
`record, we reverse.
`
`I. BACKGROUND
`
`A. The ’290 patent
`
`The ’290 patent, which issued in 2000 andis assigned
`to DSS, is directed to a wireless communication network
`for a single host device and multiple peripheral devices.
`The ’290 patent discloses a data network for bidirectional
`wireless data communications between a host or server
`microcomputer—described in the specification as a per-
`sonal digital assistant or “PDA’—andaplurality of pe-
`ripheral devices
`that
`the specification refers
`to as
`personal electronic accessories or “PEAs.”
`’290 patent,
`col. 1, ll. 11-20, col. 2,
`ll. 15-18. According to the ’290
`patent,
`this data network provides “highly reliable”
`communication, “requires extremely low power consump-
`tion, particularly for the peripheral units,” “avoids inter-
`ference from nearby similar systems,” and “is uf relatively
`simple and inexpensive construction.” Jd. at col. 1, ll. 33—
`
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`47. Figure 1 of the ’290 patentillustrates an embodiment
`of this wireless data network:
`
`PERSONAL
`
`
`
`AF LINKS
`
`ff, st
`
`FIG. 1
`
`Id. at Fig. 1. This figure depicts a server microcomputer,
`shown as PDA11, and a plurality of peripheral units 21
`to 29.
`Id. at col. 2, ll. 42—44, col. 2, 1. 66—col. 3, 1. 15.
`
`The ’290 patent teaches that the transmitters within
`the host or server microcomputer and the peripheral units
`in the data network operate in a “low duty cycle pulsed
`modeof operation.” Id. at col. 1, ll. 57-59. In such a mode
`of operation, each peripheral unit is allocated a subset of
`available time slots in which it receives or transmits data
`from or to the server microcomputer in radio frequency
`(i.e., wireless) bursts. Jd. at col. 3, 1. 57—-col. 4, 1.6. These
`time slots are determined in relation to synchronizing
`information initially transmitted from the server micro-
`computer. Id. at col. 2, ll. 35-39. In the time slots when a
`peripheral unit is neither receiving nor transmitting, its
`reception and transmission circuitry may be powered
`down.
`Id. at col. 4, ll. 6-8.
`“The low duty cycle pulsed
`operation both substantially reduces power consumption
`and facilitates the rejection of interfering signals.” Id. at
`col, 1, ll. 59-A1.
`
`The ’290 patent contains 11 apparatus claims, six of
`which—claims 1—4 and 9-10—arerelevant to this appeal.
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`Because the parties dispute only a single claim limitation
`recited in independent claim 1, they agree that claim 1 is
`representative. Claim 1 recites:
`
`A data network system for effecting coordinated
`operation of a plurality of electronic devices, said
`system comprising:
`
`a server microcomputer unit;
`
`a plurality of peripheral units which are battery
`powered and portable, which provide either input
`information from the user or output information
`to the user, and which are adapted to operate
`within short range of said server unit;
`
`said server microcomputer incorporating an RF
`[radio frequency]
`transmitter for sending com-
`mands and synchronizing information to said pe-
`ripheral units;
`
`said peripheral units each including an RFreceiv-
`er for detecting said commands and synchronizing
`information and including also an RF transmitter
`for sending input information from the user to
`said server microcomputer;
`
`said server microcomputerincludinga receiver for
`receiving input information transmitted from said
`peripheral units;
`
`said server and peripheral transmitters being en-
`ergized in low duty cycle RF bursts at intervals de-
`termined by a code sequence which is timed in
`relation to said synchronizing information.
`
`290 patent, col. 11, 1. 62—col. 12, 1. 18 (emphasis added).
`
`The only disputed limitation of claim 1 pertainsto the
`“low duty cycle RF bursts” referenced above, Claim 1
`requires both the server microcomputer and each of the
`peripheral units to comprise transmitters. According to
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`the claim, the server microcomputer’s transmitter is used
`“for sending commands and synchronizing information to
`said peripheral units,” while the peripheral unit’s trans-
`mitters are used “for sending input information from the
`user to said server microcomputer.” Jd. at col. 12, ll. 4-11.
`The transmitters on both the server microcomputer and
`the peripheral units must be “energized in low duty cycle
`RF bursts.” Jd. at col. 12, ll. 15-18. This limitation was
`the focus of the IPR proceedings below, and it is at the
`center of the single dispute on appeal.
`
`B. Relevant Prior Art
`
`The Board relied on two piecesof prior art in the IPR
`proceedings: U.S. Patent No. 5,241,542 to Natarajan et
`al. (“Natarajan”), and U.S. Patent No. 4,887,266 to Neve
`et al. (“Neve”).
`In its final written decisions, the Board
`found that the combination of Natarajan and Neve ren-
`dered obvious all of the challenged claims of the ’290
`patent. Apple I, 2016 WL 3382361, at *1, *19; Apple II,
`2016 WL 3382464, at *1, *19. Of the two prior art refer-
`ences, only Natarajanis relevant to this appeal.
`
`As the Board described it, “Natarajan is directed to
`power conservation in wireless communication, particu-
`larly battery efficient operation of wireless link adapters
`of mobile computers (also referred to, inter alia, as battery
`powered computers, hand held or
`laptop computers,
`mobile units, and mobile stations) as controlled by multi-
`access protocols used in wireless communication.” Apple
`I, 2016 WL 3382361, at *8. Figure 2 of Natarajan depicts
`this system:
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`MOBILE STATION
`
`TRANSCEIVER
`
`10,12,14,0R16
`
`SOFTWARE
`48
`
`FIG. 2
`
`BASE STATION
`
`ADAPTERS
`
`
`TRANSCEIVER——.= SOFTWARE
`~L
`
`
`
`
`
`46
`
`26,28
`
`Natarajan, Fig. 2. This block diagram shows mobile
`stations 10, 12, 14, and 16, which communicate via wire-
`less transceivers within transceiver adapters 44 and 36
`with base stations 26 and 28, which are in turn connected
`to server 18. Id. at col. 2, 11. 32-39, 51-52, 58-59, 65-67.
`
`According to Natarajan, “the main idea for minimiz-
`ing battery power consumed by wireless link adapters at
`the mobile units” depends on the “scheduled access multi-
`access protocol” through which the mobile units communi-
`cate with the base station.
`Id. at col. 3, 1. 59-col. 4, 1. 6,
`col. 4, ll. 20-23. These protocols “can be implemented to
`effectively conserve battery power by suitable control of
`the state of transmitter and receiver units at the portable
`units (i.e., by scheduling when they should be turned ON
`or OFF).”
`Id. at col. 3, 1. 66—-col. 4, 1. 3.
`“A desirable
`solution is one in which the transmitter (or receiver)
`consumes power only whenit is actively transmitting a
`message (or actively receiving a message).” Jd. at col. 4,
`ll. 3-6.
`
`Natarajan’s scheduled multi-access protocol achieves
`this goal by dividing timeinto fixed-length frames, which
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`Id. at col. 4, ll. 20-23.
`are themselves divided into slots.
`Figure 4 of Natarajan shows an exemplary frame:
`
`IFT]
`¢
`CHy
`8
`{BH
`A
`1G fAH]
`(et TELE EEE EEE PEE een
`bee |e} [Serer tt encenee >|
`pSereerren ee Do. [Reon ee re reee >].-1
`|
`| Base to
`}
`| Mobile cof
`| Contention
`|
`f Mobiles
`|
`|
`Base
`|} from Mobiles}
`|
`fecroeeTacrscea]
`fereetBeeeaf
`[eeseTbenae-9f
`|
`
`>] FH]
`
`Fl G.4
`
`Id., Fig. 4.
`
`The frame is divided into three subframes: A, B, and
`Id. at col. 4, ll. 28-38. The first subframe, period A, is
`C.
`used “for broadcast of [data] packets from base station to
`mobile units (outbound traffic).” Jd. at col. 4,
`ll. 30-32.
`The second subframe, period B,
`is used for “contention-
`free transfer of all traffic from mobile units to base station
`(inboundtraffic).” Jd. at col. 4, ll. 33-35. The third sub-
`frame, period C,
`is “for the transfer of all bursty data
`traffic in a contention mode from mobile units to base
`station (inboundtraffic).” Jd. at col. 4, ll. 36-38. Each of
`subframes A and B im this example is associated with a
`header, AH and BH,respectively, that is broadcast by the
`base station to all mobile stations at the start of the
`subframe.
`Id. at col. 4, ll. 30-35. Using these headers,
`each mobile unit can compute exactly when it should be
`ready to receive data from the base station and whenit
`should begin transmitting data to the base station. Id. at
`col. 4, ]. 67-col. 5, 1. 2; id. at col. 5, ll. 20-22. The mobile
`unit can turn its receiver or transmitter off to save power
`during those time slots in which the mobile unit is not
`receiving or transmitting data. Id. at col. 5, ll. 2-6, 23~29.
`
`C. Procedural History
`
`Apple concurrently filed two IPR petitions related to
`the ’290 patent on December 4, 2014. Apple’s first peti-
`tion challeuged the validity of claims 1-4 of the °’290
`patent, and the second challenged the validity of claims6,
`7,9, and 10. The Board instituted two IPRs on June 25,
`
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`2015, as IPR2015-00369 and IPR2015-00373, respectively.
`It instituted the first IPR to determine whether claims 1
`to 4 were obvious over Natarajan and Neve. The Board
`instituted the second IPR on the same basis, as well as on
`the ground that claims 6 and 7 allegedly were obvious
`over U.S. Patent No. 5,696,903 to Mahany. DSS later
`disclaimed claims 6 and 7 of the ’290 patent.
`
`The Board issued its final written decisions in both
`IPRs on June 17, 2016. The Board found that all remain-
`ing challenged claims—claims 1-4,
`9, and 10—were
`invalid as obvious over Natarajan in view of Neve. Apple
`I, 2016 WL 3382361, at *1, *19; Apple IT, 2016 WL
`3382464, at *1, *19.1 DSS conceded that all but one
`limitation in each of these claims was disclosed in Nata-
`rajan and Neve. Apple J, 2016 WL 3382361, at *10-11.
`But DSS disputed that either reference disclosed the
`limitation “said server ... transmitter[] being energized
`in low duty cycle RF bursts.” Jd. at *11.
`
`The Board construed the term “energized in low duty
`cycle RF bursts” as “energized, in short periods of intense
`RF transmission activity on an otherwise quiet data
`channel, only to the extent required to satisfy the data
`transmission needs over the course of a communication
`cycle.”
`Id. at *4-7. The Board explained that it “un-
`derst[oo]d the ‘duty cycle’ of a transmitter to be the aver-
`age ratio of the durations during which the transmitter is
`energized to the [total] duration of communication cycles
`over the course of network operation.” Id. at *6.
`
`The Board then turned to the question of obviousness.
`Apple argued that, because the mobile unit transmitters
`in Natarajan operated in “low duty cycle RF bursts,” “it
`
`The two tinal written decisions are identical in all
`1
`relevant respects. We hereafter cite only to the first final
`written decision for simplicity.
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`would have been plainly obvious to a [person of ordinary
`skill in the art] to have the base station operate in an
`analogous manner.”
`Jd. at *13 (alteration in original).
`Apple explained that, because the “low duty cycle RF
`bursts” limitation was not novel and because “the base
`and mobile stations have the same physical structure,” it
`“would have been no more than using a known technique
`to improve similar devices in the same way.” Id.
`
`Although DSS admitted that Natarajan discloses a
`system for reducing power consumption in mobile units,
`DSS argued that Natarajan says nothing about doing the
`same for the base station transmitter.
`Jd. at *12. DSS
`noted that the stated goal of the Natarajan reference is to
`provide energy savings for the mobile units, not the base
`station.
`Id. DSS also observed that the base station in
`Natarajan uses a different communications scheme than
`the mobile units, where the base station transmits con-
`tinuously during the time slots designated for outbound
`traffic and cannot be turned off at any point during that
`period. Id.
`
`The Board was “persuaded by each of Apple’s argu-
`ments presented above.” Jd. at *15. It found that “Nata-
`rajan is expressly concerned with ‘power conservation due
`to wireless communication, and specifically, with ‘battery
`efficient operation of wireless link adapters of mobile
`computers as controlled by multiaccess protocols used in
`wireless communication.” Jd. (quoting Natarajan, col. 1,
`ll. 7-13). The Board acknowledged that Natarajan de-
`scribes only the mobile units as battery-powered devices,
`but it noted that the base units also are conventional
`microcomputers and contain similar wireless communica-
`tion components as the mobile units.
`Jd. (citing Nata-
`rajan, col. 2, ll. 40-41, col. 2, 1. 51-col. 3, 1. 2).
`
`From this, the Board concluded “that a person of ordi-
`nary skill in the art would have been motivated by Nata-
`rajan to apply the same power-conserving techniques to
`
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`base units as it is disclosed with respect to mobile units,
`as well as that it would have been within the skill of the
`ordinarily skilled artisan to do so.” Id. The PTAB found
`“no persuasive evidence of record that it would have been
`‘uniquely challenging or difficult for one of ordinary skill
`in the art’ to do so.” Id. (quoting Leapfrog Enters., Inc. v.
`Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)).
`The Board noted that, “as the [Supreme] Court explained
`in KSR, the skilled artisan is ‘a person of ordinary crea-
`tivity, not an automaton.” Id. (quoting KSR Int! Co.v.
`Teleflex Inc., 550 U.S. 398, 420—21 (2007)).
`
`DSS appeals this single aspect of the Board’s deci-
`sions. We have jurisdiction over this appeal under 28
`U.S.C. § 1295(a)(4). See Shaw Indus. Grp., Inc. v. Auto-
`mated Creel Sys., Inc., 817 F.3d 1298, 1297 (Fed. Cir.
`2016).
`
`II. DISCUSSION
`
`“Obviousnessis a question of law based on underlying
`findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed.
`Cir. 2009). We review the factual findings underlying the
`Board’s obviousness determination for substantial evi-
`dence, whereas we review its legal conclusions de novo.
`In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
`
`A patent is obvious “if the differences between the
`subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject
`matter pertains.” 35 U.S.C. § 103(a). “Though less com-
`mon, in appropriate circumstances, a patent can be obvi-
`ous in light of a single prior art reference if it would have
`been obvious to modify that reference to arrive at the
`patented invention.” Arendi S.A.R.L. v. Apple Inc., 832
`F.3d 1355, 1361 (Fed. Cir. 2016) (citations omitted).
`
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`The sole issue on appeal is the Board’s finding that it
`would have been obvious to modify the base station
`transmitter in Natarajan to be “energized in low duty
`cycle RF bursts,” as required by the claims of the ’290
`patent. Apple I, 2016 WL 3382361, at *15.2 We hold that
`the Board’s final written decisions fail to provide suffi-
`cient explanation for its obviousness finding.
`
`As we observed in Arendi, “common sense and com-
`mon knowledge have their proper place in the obviousness
`inquiry,” at least “if explained with sufficient reasoning.”
`832 F.3d at 1361 (quoting Perfect Web Techs., Inc. v.
`InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009)).
`“But,” we cautioned, “there are at least three caveats to
`note in applying ‘commonsense’ in an obviousness analy-
`sis.”
`Id.
`“First, common sense is typically invoked to
`provide a known motivation to combine, not to supply a
`missing claim limitation.” Jd. at 1361-62 (citing DyStar
`Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
`Co., 464 F.3d 1356, 1360, 1368, 1371 (Fed. Cir. 2006), and
`Randall Mfg. v. Rea, 733 F.3d 1355, 1356, 1363 (Fed. Cir.
`2013)). Second, we have invoked commonsensetofill ina
`missing limitation only when “the limitation in question
`was unusually simple and the technology particularly
`straightforward.” Id. at 1362 (citing Perfect Web, 587 F.3d
`at 1326).
`“Third, our cases repeatedly warn that refer-
`ences to ‘common sense’—whether to supply a motivation
`to combine or a missing limitation—cannot be used as a
`wholesale substitute for reasoned analysis and eviden-
`tiary support, especially when dealing with a limitation
`missing from the prior art references specified.” Id.
`
`2 Apple admits that the Board did not adopt Apple’s
`argument
`that Natarajan expressly discloses a server
`transmitter energized in low duty cycle RF bursts. Appel-
`lee’s Br. 29. Apple has not cross-appealed this issue.
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`The Board’s invocation of “ordinary creativity” is no
`different from the reference to “common sense” that we
`considered in Arendt.
`See id. at 1361 (noting that the
`obviousness analysis
`should take into account “the
`knowledge, creativity, and common sense that an ordinar-
`ily skilled artisan would have brought
`to bear when
`considering combinations
`or modifications”
`(quoting
`Randall, 733 F.3d at 1362)). Here, the Board relied on a
`gap-filler—“ordinary creativity”
`instead of
`“common
`sense”-——to supply a missing claim limitation. Jd. at 1361.
`“In cases in which ‘common sense’ is used to supply a
`missing limitation, as distinct from a motivation to com-
`bine, ... our search for a reasoned basis for resort to
`common sense must be searching.”
`Jd. at 1363. The
`Board’s reliance on “ordinary creativity” calls for the same
`“searching” inquiry.
`
`As in Arendt, the limitation at issue here is not “unu-
`sually simple,” and the technology is not “particularly
`straightforward.” Id. at 1362. The ’290 patent devotes
`the bulk of its written description to the complex commu-
`nications protocol that enables the claimed “low duty
`cycle” mode of operation.
`’290 patent, col. 5, 1. 46—-col. 11,
`l. 52.
`As
`the Board’s claim construction discussion
`demonstrates, the question of whether a transmitter is
`“energized in low duty cycle RF bursts” is not an easy one.
`Apple I, 2016 WL 3382361, at *4-7. The missing limita-
`tion, moreover, “plays a major role in the subject matter
`claimed.” Arendi, 832 F.3d at 13862. Unlike the Nata-
`rajan reference,
`the ’290 patent contemplates a server
`that is itself a mobile device, and a stated object of the
`patent is for this server to have “extremely low power
`consumption.” ’290 patent, Fig. 1, col. 1, ll. 33-47. The
`*290 patent explains that the low duty cycle pulsed mode
`of operation is critical to achieving this goal.
`Id. at col.
`1:59-61.
`
`With these precepts in mind, wefind that the Board’s
`decisions do not satisfy the standard set forth in Arend.
`
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`The full extent of the Board’s analysis is contained in a
`single paragraph. Apple J, 2016 WL 3382361, at *15.
`After acknowledging that Natarajan does not disclose a
`base unit transmitter that uses the same power conserva-
`tion technique,
`the Board concluded that a person of
`ordinary skill would have been motivated to modify
`Natarajan to incorporate such a technique into a base
`unit transmitter and that such a modification would have
`been within the skill of the ordinarily skilled artisan. Id.
`In reaching these conclusions, the Board made no further
`citation to the record.
`Jd.
`It referred instead to the
`“ordinary creativity” of the skilled artisan.
`Jd. (quoting
`KSR, 550 U.S. at 420-21). This is not enough to satisfy
`the Arendi standard.
`
`Apple argues that this characterization of the Board’s
`analysis ignores the previous eight pages of discussion.
`Those pages, however, are devoted solely to enumerating
`the parties’ arguments. Even if we assume that the
`Board incorporated any or all of Apple’s arguments by
`reference by stating that it was “persuaded by each of
`Apple’s arguments presented above,” id., only one para-
`graph of the Board’s summary of Apple’s arguments is
`relevant
`to the Board’s obviousness conclusion.
`This
`paragraph quotes Apple’s argument that “it would have
`been plainly obvious to a [person of ordinary skill in the
`art] to have the base station operate in an analogous
`manner” to the mobile units.
`Jd. at *13 (alteration in
`original). The Board also repeated Apple’s assertion that,
`“IbJecause the base and mobile stations have the same
`physical structure, this would have been no more than
`using a knowntechnique to improve similar devices in the
`same way.” Id. (alteration in original).
`
`The Board parenthetically noted the evidence that
`Apple cited in support of these contentions, which consist-
`ed solely of paragraphs of a declaraliun from Apple’s
`
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`DSS TECH. MGMT. v. APPLE INC.
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`expert, Dr. Hu. She opined that “it would have been
`obvious to a [person of ordinary skill in the art] to have
`the base station [in Natarajan] operate in an analogous
`manner” to the mobile units, which the parties agreed
`operated in “low duty cycle RF bursts.” J.A. 1994, { 45.
`She noted that “[t]he RF systemsof the base station and
`mobile stations in Natarajan have the same physical
`structure.” Jd. (citing Natarajan, col. 3, ll. 7-8, Fig. 3).
`She then explained that a person of skill in the art “apply-
`ing the exact design disclosed in Natarajan to an applica-
`tion exactly as described in Natarajan,” where most users
`are likely to be inactive most of the time, “would have
`conceived a system in which ... the transmitter and the
`receiver of the base station ... operate in ‘low duty cycle
`RF bursts.” Jd. (citing Natarajan, col. 6, ll. 41-44). Dr.
`Hu therefore concluded that a person of skill in the art
`would not have found the “low duty cycle RF bursts”
`limitation to be “novel.” Id.
`
`To the extent the Board’s obviousness findings were
`based on Dr. Hw’s
`testimony—which is questionable,
`because the Board nevercited her testimony directly—her
`“conclusory statements and unspecific expert testimony”
`are insufficient to support the Board’s findings. Arendi,
`832 F.3d at 1366; see also Icon Health & Fitness, Inc. v.
`Strava, Inc., 849 F.3d 1034, 1047 (Fed. Cir. 2017) (“[T]he
`
`Wenote DSS’s contention that Apple did not pre-
`3
`sent this expert declaration with its initial petition for
`inter partes review. [Reply 24-26.] Because DSShas not
`appealed the Board’s reliance on this evidence, however,
`we do not decide whether this violated the applicable
`statutes and rules.
`See Intelligent Bio-Systems, Inc. v.
`Illumina Cambridge Litd., 821 F.3d 1359, 1369-70 (Fed.
`Cir. 2016) (attirming the Board’s refusal to consider an
`argument “raised for the first time in [an IPR petitioner’s]
`reply brief and expert declaration”).
`
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`Document: 42-2
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`Filed: 03/23/2018
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`15
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`[Board] is permitted to credit a party’s argument as part
`of its reasoned explanation ofits factual findings; howev-
`er, the [Board] must ‘explain[] why [it] accepts the pre-
`vailing argument.” (alterations in original) (quoting Jn re
`NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016))).4
`Dr. Hu and the Board failed to consider that Natarajan’s
`multi-access protocol
`imposes different
`transmission
`requirements on the base station and the mobile units. In
`the only exemplary embodiment in Natarajan, as DSS
`points out, the base station allocates transmission time
`slots for a mobile unit only if the base station has data to
`transmit to the mobile unit. Natarajan, col. 4, ll. 39-53;
`id. at col. 7, ll. 59-66, Fig. 6. Each mobile unit transmit-
`ter is energized only during the mobile unit’s assigned
`time slot
`for
`transmission, whereas the base station
`transmitter is energized for the entirety of time period A,
`during which the base station transmits data to the
`mobile units.
`Jd. at col. 4,
`1. 20-col. 5, 1. 29. Dr. Hu
`admitted these facts in her deposition. Neither Dr. Hu
`nor the Board, moreover, analyzed whether, if the base
`station transmitter
`in Natarajan were modified,
`its
`transmissions would be characterized by “short periods of
`intense RF transmission activity on an otherwise quiet
`data channel,” as required by the Board’s own claim
`construction. Apple I, 2016 WL 3382361, at *7 (emphasis
`added).5
`The similarities in transmission hardware
`
`4 Under the Chenery doctrine, we decline Apple’s
`invitation to consider evidence that the Board did notcite
`in its decision. See Bd. of Trs. of Leland Stanford Junior
`Univ. v. Chinese Univ. of H.K., 860 F.3d 1367, 1376 (Fed.
`Cir. 2017) (citing SEC v. Chenery Corp., 332 U.S. 194, 196
`(1947)) (‘We must base our review on the analysis pre-
`sented by the Board.”).
`5
`In her dissent, Judge Newman does not discuss
`the portion of the Board opinion where it explains the
`
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`cannot close these gaps without additional,
`analysis.
`
`reasoned
`
`For these reasons, Dr. Hu’s testimony does not consti-
`tute substantial evidence that is capable of supporting the
`Board’s conclusions “that a person of ordinary skill in the
`art would have been motivated by Natarajan to apply the
`same power-conserving techniques to base units asit is
`disclosed with respect to mobile units, as well as that it
`would have been within the skill of the ordinarily skilled
`artisan to do so.”
`Jd. at *15. The Board thus relied on
`
`rationale for its holding and, instead, relies heavily on the
`Board’s statement that
`
`“energized in low duty cycle RF bursts” simply
`means that a transmitter is not energized contin-
`uously over the course of network operation, butis
`depowered during at least two time periods of
`each communication cycle: first, in time slots in
`which the unit that includes the transmitteris as-
`signed to receive data; and second, in timeslots, if
`any, when the unit is assigned to transmit data
`but has no data to transmit.
`
`Apple I, 2016 WL 3382361, at *7. But the dissent reads
`too much into this sentence. Taken out of context, this
`passage contradicts the Board’s own explicit claim con-
`struction, because it does not
`incorporate the “short
`periods” and “otherwise quiet data channel” aspects of
`that construction. For example, if a transmitter is con-
`tinuously transmitting data—that is, it is never assigned
`to receive data and always has data to transmit—the
`transmitter would satisfy the requirements of the sen-
`tence quoted above. But the transmission activity would
`not be in “short periods,” and the data channel would not
`be “otherwise quiet.”
`It follows that the Board’s claim
`construction requires more than the quoted passage.
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`17
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`a>
`
`“as a wholesale substitute for rea-
`“ordinary creativity”
`soned analysis and evidentiary support,” and did so “when
`dealing with a limitation missing from the prior art
`references specified.” Arendi, 832 F.3d at 13862. Without
`“a reasoned explanation that avoids conclusory generali-
`zations,” this was not sufficient.
`Jd. at 1366 (quoting
`Perfect Web, 587 F.3d at 1329).
`
`Wealso find “that this is not a case where a more rea-
`soned explanation than that provided by the Board can be
`gleaned from the record.” Jd. Dr. Hu’s testimony suffers
`from the serious deficiencies that we have discussed
`above, and Apple suggests no other evidence that might
`remedy those defects. Apple failed to meet its burden of
`establishing that the challenged claims of the ’290 patent
`were obvious. We therefore reverse the Board’s finding of
`unpatentability.
`
`III. CONCLUSION
`
`For the foregoing reasons, we reverse the Board’s
`findings that claims 1—4 and 9-10 of the ’290 patent are
`obvious over the combination of Natarajan and Neve.
`
`REVERSED
`
`Costs
`
`No costs.
`
`

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`Gnited States Court of Appeals
`for the Federal Circuit
`
`DSS TECHNOLOGY MANAGEMENT,INC.,
`Appellant
`
`Vv.
`
`APPLEINC.,
`Appellee
`
`2016-2523, 2016-2524
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2015-00369, IPR2015-00373.
`
`NEWMAN,Circuit Judge, dissenting.
`
`The court now reverses the PTAB’s decision that
`claims 1—4 and 9-10 of the ’290 patent are unpatentable
`for obviousness, on the court’s holding that the PTAB’s
`explanation is inadequate to support its decision.! How-
`ever, if the PTAB’s explanation is indeed inadequate, the
`appropriate appellate action is not to grant final judgment
`
`1 Apple Inc. v. DSS Tech. Mgmt., Inc., No. IPR2015-
`00369, 2016 WL 3382361 (P.T.A.B. June 17, 2016) (Apple
`D; Apple Inc. v. DSS Tech. Mgmt., Inc., No. IPR2015-
`00373, ZU16 WL 3382464 (P.T.A.B. June 17, 2016) (Apple
`IT). The rulings are substantially identical, and I cite only
`to Apple I.
`
`

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`for the opponent. The appropriate action is either (1) to
`remand for additional explanation, or (2) to decide this
`question of law. However, the panel majority has neither
`remanded nor decided the question.
`
`As a further concern, I do not share the view that the
`PTAB’s explanation is deficient. Of course the PTAB
`must explain its reasoning, and the America Invents Act
`places significant responsibility on this agency tribunal,
`in view of the PTO’s announced intention to bring its
`technological expertise to these new